The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Sabrina’s practice involves all types of intellectual property issues, including patents, trade secrets, copyright, and trademarks. She is experienced in patent prosecution, IP due diligence, and IP litigation. Sabrina has represented clients based within and outside the United States and provides counseling of IP strategy in the U.S., WIPO (PCT), Europe, Japan, China, and other countries.
Sabrina’s practice extends to a wide variety of technologies, with a focus on medical technology. She has extensive experience drafting patent applications and advising clients on IP strategy for medical devices and health care products, including in the fields of patient monitoring, imaging, treatment, and surgery.
Sabrina received her bachelor’s degree in Bioengineering in 2007 from National University of Singapore and her JD degree in 2015 from the University of Virginia School of Law. Prior to law school, Sabrina worked as a product development engineer in Utah and Singapore specializing in orthopedic products.
Describe your practice area and what it entails.
The practice area of intellectual property (IP) encompasses a wide variety of intellectual properties, including patents, copyright, trademarks, and trade secrets. A U.S. IP lawyer may appear in front of administrative agencies, such as the United States Patent and Trademark Office (USPTO) and the United States International Trade Commission (ITC), and/or U.S. courts, typically the federal courts. U.S. IP lawyers also collaborate routinely with attorneys in other jurisdictions to serve each other’s clients’ need for global IP protection.
Broadly speaking, the types of intellectual property practices may be categorized into two areas: litigation and product/brand protection. Litigation can include IP infringement lawsuits and other more specialized practices, such as Hatch-Waxman and “patent dance” litigation, ITC litigation, Patent Trial and Appeal Board (PTAB) litigation, trade secret litigation, and antitrust litigation. When referring to product and brand protection, people tend to think of patent/trademark prosecution or copyright registration, but this area also includes advising and counseling on IP strategy, IP transactions and agreements, data privacy and security matters, and many other issues aimed at protecting client innovation.
What types of clients do you represent?
The types of clients I represent come in different sizes and forms, from multinational companies to startup companies and individual inventors. For example, my clients can be medical device companies needing IP protection for their new products or IP strategy counseling against their competitors, venture capital firms needing IP due diligence service before they invest in a new company, research institutions searching for opportunities to commercialize research efforts, and doctors developing their own surgical implants or tools.
What types of cases/deals do you work on?
A big part of my practice involves managing clients’ global patent portfolios and providing advice to strengthen the clients’ IP positions. My team and I draft patent applications and prosecute patents in front of patent examiners. I also attend oral hearings in front of the PTAB if a client decides to appeal the examiner’s rejections.
Another substantial part of my practice involves pre-litigation counseling and IP due diligence. I get actively involved in my clients’ product development process by performing “freedom-to-operate” analyses and providing design recommendations. I develop IP strategy for seed-stage or startup companies to prepare them for new funding or acquisition opportunities. I also perform diligence on companies on behalf of investors or buyers to identify and resolve IP risks.
As a smaller part of my practice, I work on litigation matters, such as Inter Partes Review proceedings in front of the PTAB. When I was an associate, I also worked on patent infringement and trade secrete misappropriation cases.
As explained in my answer to the first question, the practice of IP law is so diverse that another IP lawyer may work on completely different types of cases or deals.
How did you choose this practice area?
My interest in intellectual property started in my third year of college. In my undergraduate school, the biomedical engineering curriculum includes a course in which the students would develop a new medical device in groups. The project would culminate in a mock pitch to a potential investor. In my year, the assignment was to design a prosthesis for spinal fusion. Although the group came up with the design collectively, each group member also had a different task. I was assigned IP due diligence and wrote my first report on why our new product was clear of infringement risks from the list of relevant patents, which I found using a patent search software developed by the professor who designed this course. I knew before the end of that semester that I wanted to become an IP attorney one day.
What is a typical day like and/or what are some common tasks you perform?
The practice of IP prosecution has numerous statutory deadlines associated with each filing of a patent or trademark application. Therefore, I tend to begin the day with checking my docket, which helps me prioritize my tasks for the next few days.
My typical day would include multiple meetings with clients or coworkers who are on the same team as me for different clients. It is also common that I would have scheduled an interview with a U.S. patent examiner or received a phone call from an examiner about a pending application.
When I am not in meetings, I review work products from associates, respond to client emails, and work on upcoming deadlines on my docket.
On most days, I would also perform non-billable tasks, such as mentoring associates and attending firm committee meetings, recruiting events, and business development activities.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
For someone who has a science or engineering background, I would recommend taking the patent practitioner registration examination (colloquially known as the “patent bar”) before starting at a law firm. It is a no-brainer for anyone interested in practicing before the USPTO. Moreover, understanding how patent examination works always helps in other areas of IP practice.
I would also recommend taking IP-related courses offered by your law school. Even if someone may only be interested in patent practice, it is helpful to have knowledge of other areas of IP, such as trademark and copyright. Clients may ask their IP attorney just about anything related to IP. Another class offered at my law school, which helped my legal career tremendously, was Advanced Legal Research, taught by a senior librarian.
For a patent attorney, knowing how to search for prior art (e.g., on Google Patents) and to check file histories of patent applications in the USPTO database is an indispensable skillset. Similarly, for a trademark attorney, knowing how to conduct searches on the Trademark Electronic Search System (TESS) is invaluable. A firm’s summer program would be a good place to get started on developing these skills.
What do you like best about your practice area?
It takes a lot of work and expertise to turn a great idea into an actual product. Practicing IP law allows me to be a part of the process of commercializing innovation. It was a great feeling when I proudly told a pediatrician that the sensor she was using on my daughter was made by my client and I helped the client protect its IP so that the device could be made commercially available to improve the quality of health care in the U.S.
What are some typical tasks that a junior lawyer would perform in this practice area?
In my experience, a junior (first- or second-year) lawyer practicing IP law may typically start off with: patent or trademark prosecution assignments, such as responding to Office Actions, or drafting patent or trademark applications (including attending invention disclosure meetings); legal research, discovery, and other litigation projects at various stages of the cases; or organizing prior art searches for different purposes and reviewing the search results.
What kinds of experience can summer associates gain at this practice area at your firm?
Knobbe Martens gives our summer associates the autonomy to explore all areas of IP practice, as we expect them to shape their own practice when they come back as associates. The summer associates are encouraged to try different short-term projects from different practice groups throughout the summer program. Those projects not only give the summer associates a glimpse into a certain type of practice, but are also selected to help someone who wants to pursue a career in IP develop the necessary skills. When I was a summer associate, I drafted legal research memos, worked on Office Action responses, created patent family trees for a client’s patent portfolio, and evaluated claim scopes of a target company’s patents for an acquisition deal.
What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?
Many aspects of the IP practice do not require a technical or science background. Any lawyer can work on any trademark and copyright matters and most litigation cases except those in front of the PTAB. Knobbe has many brilliant and successful IP lawyers who do not have technical or science backgrounds.